Many of POF's clients make use of the designs registration systems in Australia and overseas to secure valuable IP rights for their products. This is particularly so in instances where the physical appearance of a product is of commercial importance.
A product may be the subject of both a granted patent and a registered design. The patent protects the functionality of the product, and the registered design protects the product's unique appearance. It is important to note however, that the option of pursuing design registration may be available even in instances where the product is deemed to be not suitable subject matter for a patent, so long as the appearance of the product is new and distinctive.
Cost
A particularly attractive aspect of the Australian designs registration system is the cost. The cost to obtain a registered design is generally far less than the cost of obtaining a granted patent.
Short Application Process
Another useful aspect of the designs registration system, is the short timeframe between filing of an application and registration. It is generally possible to obtain a registered design within a matter of weeks of the filing date, compared to a period of years often involved in obtaining a patent grant.
The short timeframe is, in part, due to applications proceeding to registration without first undergoing substantive examination. Substantive examination of a design application is optional and, if requested, is undertaken by IP Australia after registration has occurred. If a registration owner elects to proceed with substantive examination, and the registration successfully passes through the substantive examination stage then the registration is certified. This means that it can then be used as the basis for pursuing an alleged infringement.
Publication
Fast registration can have serious commercial implications for some registration owners. This is because registration brings with it publication by IP Australia of the registered design. This can be problematic, particularly where publication of the registration pre-dates the intended commercial release date of the product.
Some registration owners (for example, car manufacturers), place heavy emphasis on the release date of new vehicle models. If you are concerned with an earlier than desired publication of your product, we would be happy to discuss the various options for slowing down the registration and publication of an application.
Application Drawings
Care must be taken with a design application to ensure that the representations filed accurately and clearly depict the product, and don't include any extraneous matter that may limit the scope of protection ultimately obtained.
Statement of Newness and Distinctiveness
It is critical at the filing stage to decide whether or not to include a Statement of Newness and Distinctiveness (SND) in an application.
An SND can be important where it is desired to qualify the drawings to, for example, exclude features not part of the design. The inclusion of an SND may also be important so as to identify the new and distinctive features of the product, particularly where the product is in a crowded field.
Suitable Subject Matter for a Design Application
The Australian Design Act 2003 provides a broad definition of the types of products for which design registration is available. Nevertheless, one area of uncertainty has been whether electronic display screen images are suitable subject matter for design registration. Because of this uncertainty, there are numerous registrations on the IP Australia designs register for electronic screen images, none of which have (up until now), undergone substantive examination.
Australian design registration 345903, entitled "DISPLAY SCREEN FOR AN ELECTRONIC DEVICE" and in the name of APPLE INC., has recently successfully undergone substantive examination and proceeded to certification. This is the first Australian design registration we are aware of for an electronic display screen to be certified by IP Australia. This may indicate a shift in policy by IP Australia, although we have yet to be advised of such a policy shift.
Certification of this registration may be the catalyst for a raft of new design applications for electronic screen images, and may also encourage the owners of existing, unexamined electronic screen image registrations to request substantive examination of their registrations. This may be of particular interest to our electronics industry clients.
Our attorneys can assist you in all stages of design registrations.
The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.
